Page:Harvard Law Review Volume 10.djvu/33

TERRITORIAL RIGHTS IN PATENTED ARTICLES. 7 Justice Bradley, in his dissenting opinion in Adams v. Burke,^ speaking of the effect of the decision that, when the article had once been sold, the patent laws afford no protection, says : " Such a doctrine would most seriously affect not only the assignor (as to his residuary right in his patent), but the assignee also. For if it be correct there would be nothing to prevent the patentee himself, after assigning his patent within a valuable city or other locality, from selling the patented machine or article to be used within the assigned district. By this means the assignment could be, and in numberless instances would be, rendered worthless. Millions of dollars have been invested by manufacturers and mechanics in these limited assignments of patents in our manufacturing dis- tricts and towns, giving them, as they have supposed, the monopoly of the patented machine or article within the district purchased. The decision of this court in this case will, in my view, utterly destroy the value of a great portion of this property." So also Justice Brown, in his dissenting opinion in Keeler v. Standard Folding Bed Co. ,2 said: "Under this rule a patentee may assign his right to make and sell the patented article in every State in the Union except his own; may there establish a manufactory, and may, by his superior facilities, greater capital, more knowl- edge of the business, or more extensive acquaintance, undersell his own licensees, drive them out of business, and utterly destroy the value of their licenses." It is a matter of great practical importance, therefore, for those who deal in patent rights to know whether, upon the assignment of the patent, or the grant of an exclusive license for a certain terri- tory, there is any way in which the patentee and his assignees or licensees may protect themselves against the sale or use within their territories, and, if so, by what means such protection may be secured, and it opens an interesting field for inquiry as to what principles of law or equity are applicable to such a case. It is obvious that contracts between the patentee and the licen- sees are not in themselves sufficient to afford all the protection that is required. If each licensee should agree that he would not him- self sell the patented article outside of his own territory, and if the patentee should agree that he would not himself sell the article nor authorize it to be sold within that territory, these agreements would be binding between the parties, but they would not in them- 1 17 Wall. 453-459- ^ 157 U. S. 659-672.